The Select Committee…an update on its work programme

Who is the Select Committee and what is its function?

The Select Committee is established under the European Patent Convention. It consists of all the EU Member States participating in the enhanced cooperation. The European Commission, Business Europe, the European Patent Institute and other EPC Member States that are not participating in the enhanced cooperation have received the status of observers.

The Select Committee has -among other things- been given the task to govern and supervise the activities of the EPO relating to the UPC. An important task during the preparatory phase will be to fix the level of the renewal fees for European patents with unitary effect.

Since its first meeting on 20th March 2013, the Select committee has been regularly meeting and publishing communiqués. It appears from its “updated timeline” published by Bristowsupc that after focusing on institutional matters such as its creation, composition and adoption of its rules of procedure, the Select Committee is now looking at substantive aspects and notably legal, financial and budgetary issues.

What are the legal issues that it must address?

After reviewing in June, September and December 2013 the first Draft Rules for the Unitary Patent Protection, it is now reviewing the second Draft. These Draft Rules relate mainly to the procedures that will be administrated by the EPO in carrying out the tasks that the Participating Member States will entrust to the EPO in accordance with article 9.1 of the EU Regulation N° 1257/2012.

In June 2014: The Committee adopted in principle the Draft Rules relating to Unitary Patent Protection, with the exception of some technical aspects that require further discussion.

What are the financial and budgetary issues that it must address?

The financial and budgetary aspects of the implementation of the unitary patent protection concern mainly the level and the distribution of the renewal fees, the budgetary aspects of the tasks entrusted to the EPO in accordance with Article 9.1 of the EU Regulation N° 1257/2012 and the implementation of the compensation scheme for the reimbursement of translation costs referred to in Article 5 of EU Regulation N° 1260/2012.

In October 2013 a first meeting of the Select Committee was held to start discussions on the financial and budgetary aspects of the implementation of the unitary patent protection. During this meeting statistical and financial information were  presented to the Select Committee.

In March 2014:The Committee adopted the rules relating to the compensation scheme for costs for translations of applications filed in an EU official language which is not one of the official languages of the EPO, the reimbursement of which is available to patent holders obtaining a European patent with unitary effect. However, the financial aspects of the compensation scheme, including the amount to be compensated, will be discussed at a later stage.” (7th meeting of the Select Committee of the Administrative Council of the European Patent Organisation (Munich, 26 March 2014))

In June 2014: If the Committee adopted the draft rules relating to the Unitary Patent Protection, however it did not agree on the level of renewal fees which will have to be fixed by the participating Member States in the Select Committee in October 2014.


UPC Judges candidates…what next?

UPC Judges recruitment 2019

The appointment of judges for the UPC seems to be well on its way. In fact after approving a list of candidates in July during its 6th meeting, the Preparatory Committee is now in the process of notifying the applicants of their eligibility for becoming a UPC judge and whether or not they would require further patent litigation training.

It is however only a press-selection and candidates will have to submit a formal application if they actually wish to become a judge at the UPC. The formal application process has not yet been made public.

UPC First Mock Trial


Update: A second Mock Trial is organised by the UJUB in Paris on April 2nd 2015! See our post on this new mock here


On May 22nd, a mock trial before the Unified Patent Court at the Central Division in Paris was organised by the Union pour la Juridiction Unifiée du Brevet, the MEDEF, and the Institut National de la Propriété Intellectuelle[1].


This mock was opposing two fictitious companies in patent infringement proceedings. The document bundles with the background information, the preliminary objections and the main pleadings of the case can be found here.


The trial was chaired by Mr Alain Girardet from the French Court de Cassation, the Judge rapporteur, Dr Klaus Grabinski from the German Bundesgerichtshof, and Mr Walter Holzer, former president of the EPI who held the role of Technical judge.


After a quick presentation of the background information by the Registrar, Me Dominique Ménard, the mock trial opened with questions and answers with the Judge rapporteur on the issues highlighted during the interim phase. A video recording of the interim conference was also showed to the audience.  This was followed by the oral submissions of the claimant and defendant. The claimant was represented by Mr Michael Burdon from the United Kingdom, and the defendant by Me Pierre Véron and Me Amandine Métier from France. Finally while the panel was discussing its decision the audience was asked to vote on the outcome of the case.


The professionalism of all participants and the resources deployed gave a very realistic feel to this mock trial, which was saluted by the audience. This mock was the first opportunity for all the lawyers present to visualise the different parameters at stake with the UPC. Hence it appeared very clearly to the audience that new technologies and technical resources will be key for the UPC such as with interim video conferences and their coordination between parties across Europe. Similarly this mock trial highlighted very realistically the major differences between national jurisdictions and the UPC, the most obvious ones being of course the language of proceedings and the need to master new and extended rules of procedure.


Thanks to the hard work and the talent of its organisers, this mock trial was a real success both in terms of anticipating the legal challenges and benefits for lawyers attached to the UPC and reminding its audience of the central place that the UPC will take when it will come into effect.

The UPC Blog would like to invite its readers to view the mock together with the document bundle of the case here.



[1] Also sponsored by the AACEIPI, AAPI, ACPI, AFEP, AIPPI, AFPPI, APEB, ASPI, LES.

The Preparatory Committee

 Who is the Preparatory Committee and what is its function?

The Preparatory Committee is composed of all the Signatory States to the Unified Patent Court Agreement document 16351/12, of 11.01.2013. Poland, the European Commission and the EPO have observer status. Its objective is to prepare for the establishment of the UPC in order for it to be operational once the UPC Agreement enters into force. The Preparatory Committee will exist until the Court is established. Currently this is expected to last two years and during this time it has its own rules by which it is governed. You can find the rules here. Its work programme is set out in a Roadmap.

The Preparatory Committee has identified five major work streams; Legal Framework, Financial Aspects, Human Resources/Training, IT and Facilities. Each work stream has been assigned to a specific working group which have been given the task of preparing proposals to the Committee where all decisions are taken.

The Preparatory Committee is chaired by Mr Alexander Ramsay -from Sweden who is assisted by the vice-Chairman, Louise Akerblom -from Luxembourg- and the Head of Secretariat Eileen Tottie -from the United Kingdom.



Brussels I Regulation: EU Parliament paves the way for the UPC

Last week, the European Parliament voted to complete the legal framework for the Unified Patent Court and the Unitary Patent (IP/13/750) (523 votes for, 98 against and 7 abstentions), updating EU rules on the jurisdiction of courts and recognition of judgments. In July 2013 the European Commission had in fact proposed an amendment to the Brussels I Regulation to clarify how its jurisdictional rules will work in the context of the Unified Patent Court, as well as how the rules of the Regulation should be applied in relations between the Member States, Parties to the Unified Patent Court Agreement and the Member States not party to the Agreement.


It is now for the Council of Ministers to formally adopt this text in order to become law. This is expected to happen at the Council meeting in June.

Opening of the Training Centre for the future UPC Judges

UPC Judges recruitment 2019

The training centre for judges who will work at the Unified Patent Court (UPC) has opened in Budapest. Launched March 13th, the centre will be based in government offices in the Hungarian capital.

The opening coincided with a two-day conference to discuss the centre, along with the unitary patent and UPC more generally. Zoltán Cséfalvay, minister of state of Hungary’s Ministry for National Economy, said EU member states participating in the unitary patent system had “unanimously” decided that judges should be trained in Budapest. Benoît Battistelli, President of the European Patent Office (EPO), in his address welcomed ” another step forward in putting in place a unified patent litigation system for the benefit of inventors and industry in Europe”. Paul van Beukering, Chairman of the UPC Preparatory Committee, on the other hand highlighted the crucial role of the UPC trained judges: “If we want the Unified Patent Court to be amongst the best patent courts in the world, we need the best judges we can get. They are the most important asset of the court. To achieve that, training is essential.”

A list of prospective judges has been drawn up, but none has been selected yet.

The Unified Patent Court website has published pictures of the training centre.


The UPC and Patent Trolls, round two:

In an open letter published February 25th 2014 addressed to the Unified Patent Court, a coalition of companies and trade associations including Apple, Google, Microsoft and Samsung, repeated concerns raised last September regarding the rules of procedure of the UPC. See our post in the previous letter here.

This recent letter did not raise new concerns but insisted on the need for rules on judicial guidance, bifurcation and injunctions, in order to prevent patent trolls to abuse the new court. This consortium of companies argues that rules enabling courts to decide invalidity and infringement separately could mean that invalid patents will be held to be infringed. They also believe that judges may be persuaded to grant broad injunctions on valid patents, and fear that the probability of the UPC being flooded by Patent trolls will be increased by legal uncertainty deriving from an absence of appropriate rules on bifurcation and injunctions for judges. However as “Managing IP” suggests “judges may be less keen to bifurcate cases than many companies fear (…) partly because they would be reluctant to see part of the case off to another court in a different country, possibly conducted in another language.” (Managing IP 26/02/2014)

The sixteenth draft of the rules of procedure released on March 06th 2014 however does not bring any change related to bifurcation or injunction thus indicating that the UPC followed the Rules Committee’s position against being prescriptive and does not consider this issue to be a problem.

The Legal Group of the Preparatory Committee, chaired by Germany’s Johannes Karcher, will now consider the draft set of rules at the level of participating EU member states. It plans to hold a hearing later this year on the suggested amendments to the text. The hearing is expected to be in September or October. (Managing IP  07/03/2014)


Now that the final draft of the rules of procedure has been released do you think that they will allow an easy access to the UPC by Patent Trolls? Do you share the Apple, Blackberry or Google’s point of view? Or are you confident that the UPC has taken so far the necessary measures to protect itself against what cost the US economy $500 billion over the last 20 years according to Corporate Counsel?



You can find the latest draft of the Rules of Procedure (18th) here .

UPC and Infringement Actions:

The UPC Blog has looked in previous posts at the UPC competence and its sources of law, in this post we want to look specifically into infringement and the changes that the UPC will bring for IP professionals when considering bringing an action for infringement. Hence, the question that the UPC Blog would like to address in this post is simple: “How is the creation of a new unified patent jurisdiction going to impact infringement actions?”


This question is of course very limited in its approach and the UPC Blog would like to invite its readers to submit new questions on this topic, whether linked to their professional practice or on a more academic level. It is also important for our readers to note that the last draft of the rules of procedures being still under review by the Preparatory Committee, this post might be modified and updated in consequence.


We will look first at the definitions of infringement in the European Patent Convention (EPC) and in the Unified Patent Court Agreement (UPCA), and the differences between the two. Then we will limit our observations to the issue of the statute of limitation for an infringement action as it is now and how it will change with the UPCA.


The European Patent Convention looks at infringement actions at article 64 EPC. It starts by defining the rights conferred by a European Patent at 64(1) and (2): (1) A European patent shall, subject to the provisions of paragraph 2, confer on its proprietor from the date on which the mention of its grant is published in the European Patent Bulletin, in each Contracting State in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State. (2) If the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process.” And follows by stating at 64 (3) that “any infringement of a European patent shall be dealt with by national law.” Infringement acts are thus defined at national level: their definition, the way national courts qualify acts of infringement, the statute of limitation, etc.. may therefore vary between Contracting  States.


Under the UPCA, infringement acts are defined in articles 25 and 26, which give patent holders the right to prevent direct and indirect use of their patent. This definition of infringement as opposed to the EPC will be common to all countries ratifying the UPCA. Hence, under the UPCA a patent is infringed when a third party without the proprietor’s consent makes, offers, places on the market or uses a product which is the subject-matter of the patent, or imports or stores the product for those purposes; uses a process which is the subject-matter of the patent or, where the third party knows, or should have known, that the use of the process is prohibited without the consent of the patent proprietor, offering the process for use within the territory of the Contracting Member States in which that patent has effect; offers, places on the market, uses, or imports or stores for those purposes a product obtained directly by a process which is the subject-matter of the patent (art 25 UPCA)”

Moreover, under article 32 UPCA, the UPC will have exclusive competence for “actions for actual or threatened infringements of patents and supplementary protection certificates (…) and for actions for declarations of non-infringement of patents and supplementary protection certificates”.


Hence, after the entry into force of the UPCA -officially planned for early 2016- the European Patents and the European patents with unitary effect will both be included in the UPCA’s definition of “patent” (at article 2).  Accordingly, any action brought against the alleged infringer of a “non opted-out European Patent” and of a European patent with unitary effect will be decided by the UPC applying the definition of the infringement act of the UPCA.


This is precisely what the UPCA aims to achieve: a unified and homogenous European arena for patent infringement actions.


It is not to say of course that the EPC will lose any of its importance. On the contrary it will still be very much relevant. In fact some patent holders might want to opt-out from the UPC and stay under national jurisdictions for the whole of their patent’s lifetime or until they decide to withdraw their opt-out as provided by article 83 UPCA. In these circumstances, the EPC will carry the same weight as it has now, before the entry into force of the UPCA. Furthermore, under article 24 UPCA, the EPC is recognized as a source of law of the UPCA and as such will be relied upon by UPC judges.

But what about the time limits within which claims for patent infringement can be brought?

Under the EPC, statute limitations are determined by national law. For example in Austria infringement claims must be brought within three years from the date the right holder obtains knowledge of both the infringement and the identity of the infringer, whereas in Belgium the time limit is five years. A three-year time limit is nonetheless considered to be the general time limitation, and will be common for most countries. In some countries however, like in France, the date at which the patent holder obtains knowledge of the infringement act is irrelevant (France has just extended to 5 years its 3 year-time limitation in a law adopted by the French National Assembly in February 2014).

The UPC however sets up a different time limit under article 72 UPCA which states: “(…) actions relating to all forms of financial compensation may not be brought more than five years after the date on which the applicant became aware, or had reasonable grounds to become aware, of the last fact justifying the action.” This will of course bring considerable change to professionals whishing to initiate infringement actions by increasing how far back infringement claims can be investigated and thus potentially increasing the number of actions for infringement.

The UPCA -nor the draft rules of procedure- however address the question of the difference between statute limitations of infringement acts and statute limitations of the action for infringement. Hence if the five-year limit stated at article 72 UPCA seems to correspond to statute limitations of the action for infringement, nothing is said about infringement acts.

The Unified Patent Court will thus bring considerable change to infringement actions and the definition of infringement acts for patentees by creating not only a single jurisdiction for European patents and European patents with unitary effect but also by providing a definition of infringement common to all Contracting States. This definition has however its limits and might need to be clarified at a later stage.

This post invites IP professionals to think differently about infringement in the context of the coming entry into force of the UPCA.

The UPC Blog awaits your comments and questions on this post and on any complementary topic.




UPC and Patent Trolls…

Marc Tarabella, a European MEP (Group of the Progressive Alliance of Socialists and Democrats in the European Parliament) from Belgium asked in November 2013 the European Commission the following written question about Patent Trolls and the UPC:

Are ‘patent trolls’ soon to arrive in Europe en masse? These companies, which are very active in the United States, make money by buying up patents with the sole aim of taking anyone who infringes them to court. ‘Patent trolls’ thus make no commercial use of the patents they own; rather, they use them purely as a way of pressuring other companies into giving them money.

For now, ‘patent trolls’ are largely an American problem. However, the new EU legislation on patents could change that.

1. How is the Commission preparing for this legislation?

2. Does it have concerns that the law will be abused?

Intellectual property cases may be dealt with by two courts: one focuses on the validity of the patent, while the other establishes whether the patent has been infringed or not. As both courts work independently of each other, a product may be preventively taken off the market before the issue of the patent’s validity has been resolved. What is more, this could happen in at least 13 Member States, once the single patent becomes a reality.

3. In view of the major impact such a ban would have, would this not enable plaintiffs to extract considerable sums of money on the basis of poor-quality or even invalid patents?”


Michel Barnier, on behalf of the European Commission responded in January 2014 that:

“The Commission fails to see how the recent Union legislation on patents, namely Regulations 1257/2012 and 1260/2012, could increase the activity of so called ‘patent trolls’ in Europe. To the extent that the Honourable Member’s question pertains to the Unified Patent Court (UPC), it should be noted that the UPC agreement is an instrument under international law and is not part of Union law. The matter is thus outside the Commission’s remit. The Commission will, however, provide the following factual information.

The UPC as a common specialized patent court will increase legal certainty, and a centralized patent revocation procedure will leave less room for ‘patent trolls’ to exploit current fragmentation.

The UPC Agreement provides for safeguards against ‘patent trolls’. No automatic injunctions shall be granted: the UPC has the discretion to weigh the parties’ interests and to take into account the potential harm from the grant/refusal of the injunction. The Rules of Procedure (draft of 25 June 2013) foresee a possibility to require reasonable evidence that the patent is valid and being infringed and to order an adequate security for any injury likely to be caused to the alleged infringer if the injunction is later revoked.

The UPC is a single court competent for both patent infringement and revocation actions. A local/regional division has only a possibility, after having heard the parties, to refer a counterclaim for revocation to the central division. The Rules of Procedure provide that in case of a high probability that the patent will be held invalid in the revocation procedure the court must stay the infringement proceedings. The objective is to ensure that the patent validity is dealt with before the infringement action can proceed.”


This written question comes after the open letter signed by a number of very important groups such as Google, Apple, Cisco, Microsoft or Intel in September 2013 who raised concerns about the danger of Patent Trolls for the UPC, and especially in relation with injunctions. The UPC injunction power will in fact extend beyond a single country to most of Europe, which could lead to a rise of abusive litigation before the UPC. The open letter argued that “a rule that does not offer sufficient guidelines on when to grant injunctions will create strong incentives for abusive behaviors and harm the innovation that the patent system is designed to promote”, it also highlighted the fact that to mitigate the potential for abuses of Patent Assertion Entities, the UPC should be guided by strong rules of procedure assessing proportionality prior to granting injunctions.


The 15th draft of the rules of procedure so far deal with injunctions in rule 211 which sets out the criteria for the granting of preliminary injunctions. It states that “(1) The Court may in particular order the following provisional measures: (a) injunctions against a defendant (…) (2) In taking its decision the Court may require the applicants to provide reasonable evidence to satisfy the Court that (…) the patent is valid and his right are being infringed. (3) (…) the Court shall have discretion to weigh up the interests of the parties”. What causes concerns is of course the word “may” which indicates that it would be at the discretion of the UPC and its judges to apply the proportionality safety nets set out in rule 211. The definitive draft of the rules of procedure has not been yet released but it can only be hoped that safeguards against patent trolls will be secured.


The UPC Blog awaits your comments and thoughts on this issue:

Do you think that the UPC might be targeted by Patent Trolls?

Do you think that the draft rules of the UPC are too weak to prevent abusive litigation?

Or on the contrary, do you think as Michel Barnier, that the existing safeguards are enough?

Do you think that the answer to that problem might ultimately lie in the hands of the newly trained UPC judges?